In 1709 (or was it 1710?) the Statute of Anne created the first purpose-built copyright law. This blog, founded just 300 short and unextended years later, is dedicated to all things copyright, warts and all. To contact the 1709 Blog, email Eleonora at eleonorarosati[at]gmail.com

Friday, 26 February 2016

During a review of the “legally verified” version of the Trans-Pacific Partnership (TPP) Jeremy Malcom, the Senior Global Policy Analyst for the Electronic Frontier Foundation (EFF) has discovered a significant change in the text which will reintroduce criminal penalties for the violation of copyrights protecting intellectual property. Malcom said in his statement posted to EFF’s website that he believes this change substantially expands the criminal penalties for copyright infringing activities saying "In its revised form, the only criminal provision that a country is exempted from applying in those circumstances is the one to which the footnote is attached—namely, the ex officio action provision. Which means, under this amendment, all of the other criminal procedures and penalties must be available even if the infringement has absolutely no impact on the right holder’s ability to exploit their work in the market. The only enforcement provision that countries have the flexibility to withhold in such cases is the authority of state officials to take legal action into their own hands.”

A YouTube video that is part of a Harvard University online course on copyright law is once again accessible to students after Sony Music Entertainment unblocked it and released its copyright claim. Sony had the lecture taken down from YouTube on the grounds of copyright infringement. The videotaped lecture, which explains aspects of copyright law as it applies to music and licensing, is taught by William Fisher, the Wilmer Hale Professor of Intellectual Property Law at Harvard Law School. The lecture includes clips of several versions of the Jimi Hendrix song "Little Wing," which prompted Sony Music, which owns the rights, to have it removed. More here and here.

TechDirt tell us that the US Copyright Office "has decided to take a stance on copyright law that requires two slightly odd things. First, it requires ignoring what the Copyright Act actually says and then, separately, it requires pretending that the law says something that it clearly does not say. That's pretty incredible when you think about it. " Its a well written piece that looks at the 'making available' right in the USA concluding that when it comes to 'making available', it is "somewhat disappointing that the Copyright Office has decided that it can create a right that isn't written into the law and insist that must be what Congress meant all along, while at the same time ignoring the stuff that is written in the law and saying that couldn't possibly have been what Congress meant."And don't forget that back at the end of December, the U.S. Copyright Office published a Notice of Inquiry seeking to “evaluate the impact and effectiveness of the DMCA safe harbor provisions” found at 17 U.S.C. § 512. Comments in response to the Notice of Inquiry are due in by March 21st, 2016, and the Office indicated it will hold public meetings to discuss the issues raised after the comments have been reviewed.

And finally, The Copykat notes that in Hong Kong, Secretary for Commerce and Economic Development Gregory So Kam-leung has said that if the copyright amendment bill does not pass next week, it will be withdrawn. At a press conference Secretary So said that the decision was made in the interest of society overall. He denied that it was an act of admitting defeat. So said that there were still many bills waiting to be discussed at Legislative Council, as he called pan-democratic lawmakers “selfish”, blaming them for wasting time and money.

Thursday, 18 February 2016

A Glasgow bar has become the first in Scotland to be hit with a court penalty for showing English Premiership football matches via the unauthorised use of foreign broadcasts. The Football Association Premier League (FAPL) have issued a release saying that the Merchants Quay bar in Paisley Road faces having to pay the FAPL up to £6,000 for copyright infringement in damages and costs awarded in the Court of Session - although the final amount has yet to be determined. The FAPL says the judgement follows an 18-month long crackdown in Scotland against bars using foreign feeds to show matches from the top flight of English football. The Premier League says it has sent 31 'letters before action' to pubs in Scotland. It says that in the majority of cases the pubs simply agreed to cease showing the matches. In five cases the FAPL took legal action against pubs and interim interdicts were awarded, preventing unauthorised broadcasts until a court hearing.The FAPL have pledged further strong action as it undertakes a programme to prevent 'the undermining of its deal with Sky Sports and BT Sport for coverage of Premier League matches'. Readers of this Blog will remember the case involving Portsmouth landlady Karen Murphy which established that individuals living in the UK are allowed to use digiboxes which provide authorised services from other EU member states to watch Premier League football in the UK However this case did not extent such a right to commercial premises.

A Premier League spokesman said: "The courts granted the judgment following failure by the defendants to engage in the case, despite several attempts to contact the publican."

And also from Scotland - and the Scottish Law Society - who have said that proposed EU legislation allowing holiday makers travelling in Europe to access online content, such as digital film and TV services is 'too timid'. Whilst the Society has welcomed the European Commission’s proposed legislation, which would allow EU residents travelling within the EU to access digital content services which they have paid for in their home country, they have called for the legislation on cross-border portability of digital content services to be extended to cover digital subscriptions purchased by EU residents anywhere in the EU.Jim McLean, convener of the Law Society’s Intellectual Property committee, said: “We’re delighted that the European Commission is looking at ways to improve online content services for consumers and welcome the proposed regulation which will allow EU residents to access digital services such as Netflix, Sky and Amazon Prime, when travelling within the EU on holiday or business. But he added: “However we believe the proposed legislation is too timid and should also cover online content services purchased or obtained by a subscriber within the EU, even if that is outside of their home country" and “This would align with the Commission’s strategy to allow for wider online access to works by users across the EU and would be more straightforward for both the consumers and the providers.”http://www.heraldscotland.com/news/14278737.Glasgow_pub__quot_first_in_Scotland_quot__to_receive_penalty_for_Premier_League_copyright_breach/Joined cases C-403/08 Football Association Premier League Ltd and Others v QC Leisure and Others and C-429/08 Karen Murphy v Media Protection Services Ltd More on the Karen Murphy case here. http://www.lawscot.org.uk/news/2016/02/eu-proposals-for-tv,-music-and-sport-subscriptions-too-timid-says-law-society/

Last week, we looked at some of the legislative developments currently wending their way through the French Senate.

France's other legislative body, the National Assembly, is also considering copyright-relevant legislation, namely a bill to modify the regime applicable to the private copy levy. The main proposed changes are as follows:

- to rename the levy from "remuneration for private copy" to "compensation for private copy"; this change in terminology is intended to hew more closely to the levy's function as stated by the CJEU;

- the make up of the commission that sets the rate of the levy is currently 50% representatives of the rightsholders, 25% representatives of manufacturers of the various media to which the levy applies and 25% representatives of consumers; the bill proposes to changes this to one-third for each category;

- under existing law, 25% of the amounts collected under the levy by the Collective Management Organziations are to be used in connection with certain statutorily defined purposes including aid for artists and authors and live shows; the bill adds to this list the purpose of reinforcing legal online offerings;

- the bill proposes to streamline the process whereby professionals can obtain reimbursement of the levy.

Tuesday, 16 February 2016

Music publisher Warner/Chappell has filed papers indicating the settlement terms in the 'Happy Birthday' case - and has agreed to pay $14m to to a class of “thousands of people and entities” who had paid licensing fees to use the song since 1949 and to end the lawsuit that challenged its copyright to Happy Birthday To You – possibly the world’s most famous song. Readers will remember that back in September 2015, US district judge George H King ruled that Warner/Chappell did not own the lyrics to the song, just some of its musical arrangements. Next month, King must approve the settlement. The settlement would also grant $4.6 million in fees to the lawyers for the plaintiffs, a group of independent artists and filmmakers who filed separate suits in 2013 that were later combined. More on this case on CMU here.

Ricky Spicer, one third of The Ponderosa Twins Plus One (Spicer being the "One" after he joined up with the singing twins), has filed a law suit seeking class action status against and damages from a large cross-section of the digital music landscape that includes Spotify, Apple, Google, SoundCloud, iHeartMedia, Pandora and Sony Computer Entertainment - over royalties related to pre-1972 recordings. Spicer's action directly relates to several other ongoing cases, all related to the same complex issues of copyright ownership and music licensing - including the cases brougt by Flo and Eddie from the Turtles against Sirius XM. But interestingly the filing says the various defendants may have thought they had licensed his album - but they haven't: In the filing Spicer makes the allegation that a "phantom party... used back channels and private under-the-table dealings to transfer licenses that ultimately wound up in the hands of Defendants."Two US publishers are having a spat over who has the right to publish the law - here the right to exclusively publish the Georgia Administrative Rules and Regulations. Legal publisher Fastcase wants a federal judge to fend off a cease-and-desist demand from rival Virginia-based Lawriter, which has been designated as the exclusive publisher of Georgia's compilation of the rules and regulations of its state agencies. Fastcase argue that the Georgia Regulations are public law published under statutory mandate and are in the public domain: "Defendant cannot claim any exclusive right in, to, or in connection with, the Georgia Regulations. Thus, Fastcase seeks declaratory judgment that Lawriter has no basis from which to prohibit Fastcase from publishing the Georgia Regulations in its subscription legal research service." The case is in the US District Court in the Atlanta Division of the Northern Division of Georgia. The New York Times has launched a legal action against David Shields, the author of War Is Beautiful, a book that argues the Times systematically glamorises war by the way that it depicts armed conflicts and their aftermath. Shields licensed several dozen images for his book - but he also included thumbnail versions of some images without clearance, and the Times claims that these reproductions violate its copyrights. One would think that Shields has a good case that the uses constitute "fair use" - not least from the US Court of Appeals for the Second Circuit in Bill Graham Archives v. Dorling Kindersley, Ltd., 448 F.3d 605 (2d Cir. 2006) which confrimed that the use of thumbnail images of Grateful Dead posters in a coffee table book about the band was indeed faor use - but we shall see. In all events its rather good publicity for Mr Shield's book.

Whilst the copyright status of the The Diary of Anne Frank remains a topic of debate in Europe, with the Foundation that controls the copyright arguing that an edit by Anne Frank's father and later translations mean it is still protected by copyright law, the Diary has been withdrawn from Wikisource in the US because of the longer term of copyright protection in that jurisdiction. Anne Frank died in 1945 which means that the book moved into the public domain in the Netherlands and the rest of Europe on January 1, 2016, 70 years after her death - although the Anne Frank Fonds say that this term should run from the death of Otto Frank in 1980. But in the US, Wikisource, a digital library of free texts maintained by the Wikimedia Foundation, have withdrawn the text. Their legal counsel Jacob Rogers, said the removal was the result of an overreach of U.S. copyright law but believes that they have no other option than to comply saying “Today, in an unfortunate example of the overreach of the United States’ current copyright law, the Wikimedia Foundation removed the Dutch-language text of The Diary of a Young Girl” adding “We took this action to comply with the United States’ Digital Millennium Copyright Act (DMCA), as we believe the Diary is still under US copyright protection under the law as it is currently written”. Wikimedia's servers fall under the U.S. jurisdiction - and wikimedia had apparently been informed that the publication of the text would violate US copyright laws. More on TorrentFreak here.The IPO's China IP Newsletter tells us that the State Administration of Press & Publications, Radio, Film & Television (SAPPRFT) and the Ministry of Industry and Information Technology (MIIT) have jointly announced new regulatory measures governing online content distribution. The Regulations cover the administration of Internet platforms and require platforms to register in order to publish content online. The platforms should keep records of all uploaded works for 60 days and will be subject to annual inspections. The Regulations also include a pre-approval mechanism for publication of online games. Meanwhile, the State Council Legislative Affairs Office (SCLAO) has launched a separate consultation on Regulations on the Administration of Publication of Digital Material. The deadline for comments on the Regulations is March 10. More here and here (in Chinese).And finally - an article on ArtsTechnica that's well worth a read: "Embattled copyright lawyer uses DMCA to remove article about himself". Its all about attorney Marc Randazza's battles to delete an online article about a dispute between his former employer and himself and who told Wordpress that the unflattering story "is not fair use."

Monday, 15 February 2016

While the French Senate continues to debate whether (and to what extent) the private copying exception and corresponding levy should be extended to the cloud (and in particular network PVRs), there have been two interesting amendments introduced intended to strengthen the CNC's ability to act against copyright infringement. The Centre national du cinéma et de l'image animée (CNC) is the regulatory body overseeing French cinema.

The first legislative development concerns the CNC's ability to file a criminal copyright complaint directly with the investigating magistrate (juge d'instruction), thereby putting in motion the criminal action. The proposed amendment would allow the CNC to do so where the alleged infringement diminishes the financial resources to which it is entitled (i.e., certain taxes), which is a relatively low threshold. Moreover, the amendment specifies that, contrary to ordinary practice in criminal matters, there is no obligation to file a complaint with the Procureur de la République (district attorney) prior to lodging the complaint with the investigating magistrate.

The other proposed amendment would add the CNC to the list of persons and entites entitled to bring an action in cessation in the event of online copyright infringement. In accordance with EU law, French law adopted Section L.336-2 of the Intellectual Property Code, which allows certain parties to seek a court order against intermediaries (such as ISPs and search engines) to take the necessary steps to cease online copyright infringement. Currently these include, in addition to the rights holders themselves and their assignees, Collective Management Organizations for copyright and professional bodies that defend rights holders; should the proposed amendment be adopted, the CNC would be added to this list.

The website Petapixel and the Daily Mail have
reported on a spat between a Belgian photographer named Ezequiel
Scagnetti and One Direction band member Harry Styles. It seems
that Styles used a photograph of a Burmese boxer
taken by Scagnetti on his Instagram page, without crediting Scagnetti or obtaining his
permission. Scagnetti responded in a fairly forthright way, and in so
doing incurred the disdain of some of Styles's fans. Given that
Styles has nearly 16 million followers on his various social media
accounts, there was a high probability of the flame war which ensued.

It is debatable whether the posts of the young fans who leapt to the defence of their idol are indicative of the general level of knowledge about copyright of that particular demographic as a whole. But the fact that Harry Styles - someone whose considerable fortune is largely thanks to copyright - saw fit to just appropriate this image in the way that he did, is a sad reflection on how the use of social media has the potential to undermine the value of copyright, particularly in photographs. I have no idea aboout Styles's personal position on the UK government's attempts to bring in the private copying exception, but I can be pretty sure that his record label, and many others in the music business, vehemently oppose it, unless it is accompanied by a levy on recordable media etc. It is therefore more than a little ironic that one of the most high profile of musicians should effectively be saying that copying other people's work on social media is acceptable. Don't forget that, unlike the two examples I quoted in my previous posting about 'lifting' images from social media, Scagnetti is a professional photographer, and thus stands to be financially damaged by this sort of behaviour.

However following his somewhat intemperate initial outburst, the photographer was wise enough to know that he couldn't win in slanging match with the fans. Instead he posted a short summary (an extract of which is shown below) of why copyright matters both to him and Harry Styles, presumably in the hope of educating the fans who clearly neither know nor care about such things.

" Do you know that #harrystyles and myself, we live of [sic] copyright? Every streamed song, every CD you buy, every concert ticket you pay, you are paying artist’s copyrights. If you are not paying for it, some sponsor or company is doing it for you. Nothing is free. Neither Harry Styles work’s [sic], neither my work."

However I fear it will
take much more than this and the IPO's initiatives, to eradicate the widespread practice of
lifting and sharing of other people's work, particularly photographs,
on social media.

Sunday, 14 February 2016

A couple of months ago this blog reported that the new (5th) edition of Performers' Rights by The Hon Mr Justice Arnold has finallybecome available.Via 1709 Blog friend Hasan Kadir Yilmaztekin(University of Exeter) comes the news that the recently created New IP Lawyers network [see here] is now organising what looks like a great event.On 18 April 2016 in London there will be an evening of discussion on - indeed - performers' rights with a keynote address by The Hon Mr Justice Arnold himself.This, however, is not all.

PhD students, early career researchers and young lawyers are in fact invited to submit a short paper on any area related to performers’ rights.

Papers should be no more than 1,500 words and be submitted to newiplawyers@gmail.com (alongside a short bio) before 18th March 2016.

The New IP Lawyers Executive Committee will select the three best papers, the authors of which will be invited to present at the Performers’ Rights Seminar.

The presentations should be no longer than 15 minutes.

Mr Justice Arnold has agreed to provide feedback to the presenters and select a final winner.

As readers know, over the past few years this very blog has followed
closely relevant developments in the world of orphan works at the EU, UK and US
levels.

Via 1709 Blog friend and copyright scholar Prof Maurizio Borghi (Bournemouth
University) comes the news that - according to early results [here and here] of a 3-year
research project (EnDOW) undertaken at Bournemouth and
funded by Heritage Plus and the EU Commission (JPI
Cultural Heritage and Global Change) - the diligent search requirement
established by the Orphan Works Directive has been proving
more burdensome to satisfy than expected.

This conlusion has been reached by taking into consideration the
situation in the UK, Netherlands, and Italy.

"Legislation on
orphan works require that a Diligent Search of potential rightholders is
carried out in good faith by consulting appropriate sources. However, the
conditions set forth by the law to comply with this requirement pose
significant burden to would-be users of orphan works. The analysis conducted by
EnDOW researchers in three countries (UK, Italy and Netherlands) reveals that
carrying out a Diligent Search may require consultation of an overly high
quantity of diverse sources of information. Most importantly, the analysis
shows that a sizeable share of these sources is not easily accessible or, even,
not accessible at all. In particular, the analysis shows that:

·A total of over 350 different sources have been identified in Italy;
over 200 in the UK and almost 90 in the Netherlands.

·A Diligent Search on published books may require consulting up to 32
different databases in the Netherlands, up to 80 in the UK, and up to 131 in
Italy.

·Of all the sources to be consulted to conduct a Diligent Search, 70% are
freely accessible online in the UK, 56% in Italy and 54% in the Netherlands.
This means that, depending on the country, from one third to almost a half of
the required sources are not available for free (unrestricted) online
access.

·The online availability of sources is the highest for published books
(75% in the UK) and the lowest for audiovisual works (only 42% in the
Netherlands).

·Guidelines on how to conduct a Diligent Search have been issued only in
the UK (by the Intellectual Property Office); no guidance has been provided in
Italy and in the Netherlands.

The study suggests a
possible solution to this problem that involves soft-law intervention to
establish hierarchies among sources for Diligent Search, with a diversification
between compulsory and optional sources, depending on their relevance and
accessibility. Moreover, the study suggests that a Diligent Search should be
considered to be carried out in good faith also when sources that are not
freely accessible online are disregarded."

Friday, 12 February 2016

On February 10, 2016, Kendall Jenner and Kendall Jenner,
Inc., filed a right of publicity and trademark infringement suit in the Central
District of California against Cutera, a provider of laser dermatological
treatments. The case is Kendall Jenner Inc. v. Cutera, CD
California, 16-00936.

Who is Kendall Jenner? Well, she is “one of the one of the world’s most popular supermodels” [sic] as
the complaint explains (or hiccups?). She has “graced the covers of the world’s most prestigious fashion magazines”
and “walked the runways for the elite of
the fashion world.” She also is a “successful
clothing designer” and a “well-known
television personality” as the Keeping
Up with the Kardashians reality show airs “in over 160 countries worldwide” (you read that right).

If all these achievements would not be enough, Ms. Jenner is
also “one of the largest social media
presences of any young woman of her generation,” with over 48 million
followers on Instagram, over 15 million followers on Twitter, and some 12
million “likes” on Facebook. Wouldn’t it be nice if Ms. Jenner tweeted about
this blog post?

Defendant Cutera is, according to the complaint, a “designer of medical aesthetic applications.”
One of its products is Laser Genesis, a laser treatment which dermatologists
may use to rid their patients of spider veins, dark spots, wrinkles, razor
bumps and other skin defects.

Just before the beginning of Fashion Week in New York, Cutera
started advertising early February the Laser Genesis treatment in New York, particularly
“outside New York skin care centers.”
The ad features a picture of Plaintiff on the right side and reads at the top: Acne “Completely Ruined” Kendall Jenner’s
Self-Esteem. The ad further claims that Laser Genesis is responsible for Plaintiff’s
“nearly flawless skin.” The ad has
also allegedly been distributed in California, around the U.S. and even around
the world.

Alas, Defendant had allegedly not sought permission to use
Plaintiff’s name and likeness. If this is proven, it would clearly be an
infringement of Ms. Jenner right of publicity.

As this blog concentrates on copyright, I will not address
the trademark infringement claim. Let’s just note that Plaintiff owns the
KENDALL JENNER registered trademark in class 35 for “advertising services, namely, promoting the brands, goods and services
of others” and “endorsement services,
namely, promoting the goods and services of others.” The complaint alleges
that Cutera’s ad is likely to create consumers ‘confusion, and capitalizes on
Plaintiff’s good will. The complaint also alleges that the ad confuses the
public to mistakenly beleive that the famous model sponsors, endorses and is
somewhat associated with Cutera, which would be a false association or endorsement
under 15 U.S.C. §
1125(a).

Plaintiffs claim that Defendant has violated Ms. Jenner’s
right to publicity, as protected by California
Civil Code § 3344. The complaint does not elaborate on the right to
publicity claim, but indicates that “Plaintiffs
have suffered and will continue to suffer damages in an amount to be proven at
trial, but not less than a number well into eight figures.”

Indeed, it is obvious that it is Ms. Jenner who is pictured
on the ad, and therefore she is, under the California statute, “readily identifiable from a photograph when
one who views the photograph with the naked eye can reasonably determine that
the person depicted in the photograph is the same person who is complaining of
its unauthorized use” (the ad is pictured p. 11 of the complaint).

There is no doubt that the ad is using Plaintiff’s name and
likeness under California right to publicity statute “for purposes of advertising or selling, or soliciting purchases of,
products, merchandise, goods or services.” Consent would be a defense, but
it does not appear to be available to Defendant in this case.

The complaint does not mention it, but Cutera tweeted in
November 2015: “Have you heard? Kendall
Jenner Admits to Getting #cutera #lasergenesis!” with a link to an blog
post on the supermarket checkout gossip magazine Life & Style site, which in turn quoted a statement allegedly
made by Ms. Jenner on her website. The link
to this page on Ms. Jenner’s site now returns a 404 error message and the page seems
to have been recently taken down, if
one refers to the Internet Archive site. However, even if it would be true
that Ms. Jenner had mentioned Laser Genesis on her website, this would not be
an endorsement, only the expression of her opinion. Indeed, if she had
mentioned it on her site and not disclose that she had been compensated for the
endorsement, it would have been a breach of the Federal
Trade Commission Endorsement Guides. However, the part of the ad which
quotes her as saying that acne “completely
ruined” her life may be protected by the First Amendment, even if Ms.
Jenner did not consent to its use , but that would be quite a stretch.

The complaint claims 10 million dollars in damages and
further claims that, as Defendant has acted “willfully, maliciously, and oppressively,” Plaintiffs are thus entitled
to punitive and exemplary damages as well. The case is likely to settle before
going to trial.

Thursday, 11 February 2016

Football season ended in the U.S. last Sunday with the Super
Bowl (Denver won), and baseball season (alas!) has not started yet. Basketball
season is in full bloom (go Knicks!), but will end in the Spring.

But basketball fans may assuage their end-of-season blues by
playing basketball video games all year long. These games features digital
versions of the current players, and thus are regularly updated. Last fall,
video game company 2K Games, Inc. (2K) released the 2016 version of its annual
basketball video game, NBA 2K16. Four million
copies were sold its first week on the market.

The game reproduces the likeness of basketball players. Some
of them, LeBron James, Kobe Bryant, Eric Bledsoe, DeAndre Jordan, and Kenyon
Martin sport tattoos in real life, and their digital representation sport the
same tattoos in the NBA 2K16 game, as they already did in the NBA 2K14 and the
NBA 2K15 games.

The design of these tattoos had been created by several
artists who later signed licensing agreements with Solid Oaks Sketches, LLC.
(Solid Oaks). Following the release of the NBA 2K14 and NB 2K15, Solid Oaks engaged
in a negotiation with 2K in July 2015, in anticipation of the September release
of NBA 2K16, as it believes that, by reproducing the tattoos in its video
games, 2K infringed Solid Oaks ’copyright.

The designs at stake are all registered with the Copyright
Office, as tattoo artworks. What about the real tattoos?

Plaintiff argues that tattoos are protected by copyright, as
they are “pictorial, graphic, and sculptural works” under 17 U.S.C. §102(a) (5).
Plaintiff also argues that tattoos are fixed in a tangible medium of expression,
noting that “the tattoos designs are
imprinted permanently upon the skin of humans, clearly stable and able to be perceived
for much more than a transitory duration” (at 28). Tattoos also satisfy the
“minimal degree of creativity” requirement set by the Supreme Court in Feist
Publications, Inc. v. Rural Tel. Serv.
Co.

Plaintiff cites an article by Yolanda M. King, The
Challenges Facing Copyright Protection for Tattoos to support its claim
but notes, however, that “[t]he issue of tattoo copyrightability has yet
to be decided upon in court due to numerous settlements preventing a final
judicial opinion.”

It seems that tattoos may be protected by copyright. Is there a defense available
to the Defendants?

Possible Defenses: Fair
Use and De Minimis

Fair use is a defense to a copyright infringement claim, and
the SDNY would look at the four fair use factors,
(1) purpose and character of the use, (2) nature of the copyrighted work, (3) amount
and substantiality of the portion used in relation to the copyrighted work as a
whole and (4) effect of the use upon the potential market for or value of the
copyrighted work to find whether the use of the tattoos was fair.

Defendants in this case could certainly claim that the
amount taken in relation to the video game was small enough to be fair. They
could even claim that the use of original work was so little that it does not
even warrant a review by the court, as de
minimis non curat praetor, the court does not concern itself with trifles.

However, plaintiff took care to note in the complaint that “On social media, 2K has promoted the
improved tattoo customization as a major feature in the game” (at 15) and
that “Game reviewers praised NBA 2K16’s improved
visuals, which included smoother looking character models and more
individualized tattoos” (at 16), and so probably stands ready to argue that
the use was significant, both quantitatively and qualitatively.

A Possible Defense: Terms
of Players’ Contracts with Their Tattoo Artists

Did the players themselves have a licensing contract with
the tattoo artists who applied the designs at stake on their bodies?

Indeed, sports agents should be well advised to explain to
their clients that sporting one or more tattoos may impede their ability to monetize
their image. While his tattoos make LeBron James an even more interesting player,
having a court find out that their reproduction infringes the right of a third
party would rather complicate the drafting of a (lucrative) agreement to
license his image.

Should players be advised to secure the exclusive right of
their tattoos before going under the inky needles? An author has argued
for the need of an implied license.

It has been reported
in 2013 that the National Football Association Players Association advised
agents to recommend that their clients secure a release from the tattoo artist,
and even to track down the artists who have done their previous tattoos to secure
such release as well. This advice was given following the Whitmill vs. Warner Bros. Entertainment Inc., 11-cv-00752 (E.D.
Mo.) case, where the tattoo artist who had created the highly original tattoo sported
by Mike Tyson filed a copyright infringement suit to prevent the release of The Hangover2, where actor Ed Helms sports a similar tattoo.

The National Basketball Players Association will probably
issue similar advice following the 2K Games copyright infringement complaint,
if it has not done it already. Meanwhile, many IP attorneys are hoping the 2K16
case will not settle, so that the SDNY will have an opportunity to rule on
whether tattoos in general, and tattoos reproduced in video games in particular,
are indeed protected by copyright. It should not be a slam dunk case (sorry).

Wednesday, 3 February 2016

The Higher Regional Court Munich (OLG) decided yesterday that YouTube and its service cannot be called to account for any copyright infringements. Instead, the judges found that the sole responsibility lies with individual uploaders, even though GEMA is keen to point out "YouTube generates substantial economic profits by making the videos available". Based on this decision, YouTube is presently not held financially accountable within the current legal framework when works protected by copyright are used on the platform.. The action against YouTbe was brought by GEMA which represents the copyright of more than 70,000 members (composers, lyricists and music publishers) in Germany, and more than two million copyright owners globally. It is one of the largest collective rights management organisations for authors of musical works in the world.The GEMA press release says this: On 28 January 2016, the Higher Regional Court Munich (OLG) pronounced the decision regarding the claim for damages against YouTube (file number 29 U 2798/15). This was another instance where the judges could not bring themselves to recognise YouTube as a copyright infringer and subsequently hold it accountable for payment of an adequate remuneration for authors. "Today's decision is most regrettable. The court has obviously followed YouTube's argumentation that it is only the uploaders who are responsible for the contents that are retrievable via the service", comments Dr Tobias Holzmüller, General Counsel at GEMA, on the decision: "We consider this to be wrong. Furthermore, the decision is not justified from an economic perspective, as it continues to enable YouTube to generate high advertising revenues without passing them on to musical authors."The background to the legal dispute is GEMA's demand for an adequate payment to musical authors for the use of their repertoire protected by copyright via YouTube's platform. YouTube has not paid GEMA any licence fees for the use of music on its video platform to date, even though it generates substantial advertising revenues with the music.Thomas Theune, Director of Broadcasting and Online at GEMA, adds: "In our opinion, YouTube exploits works retrievable via the service. This type of exploitation is subject to licence fee payments. YouTube is not only a technical service provider, it actually conducts itself like a music service. As a consequence, YouTube should, just like a music service, obtain licences and not pass the responsibility on to the uploaders".The OLG decision is not yet legally binding. The right to appeal was expressly granted. Holzmüller explains the next steps as follows: "We shall study the reasons for the decision and then probably launch an appeal"."The unfair allocation of value created in the digital economy has been a problem for authors for many years. Creative content has led to substantial income being generated in the online sector." "To date, it has been mainly platform operators such as YouTube that have gained an economic benefit by shirking their responsibilities to pay authors adequately, referring to their privileged position as to liability. It is thus time that authors finally get their fair share of the value created in the digital economy." www.gema.de/en/aktuelles/youtube/

Tuesday, 2 February 2016

Despite a $25 million rebuke by a federal jury in December for contributing to piracy on its Internet service, Music publisher BMG says that Cox Communications has not learned its lesson. BMG said Cox's network continues to be used by its customers for massive copyright infringement, undermining BMG's music sales. The company asked U.S. District Judge Liam O'Grady in Alexandria, Virginia, to grant a permanent injunction to force Cox to stop the illegal file sharing saying “Now, more than a month later, Cox’s network continues to be the site of massive, ongoing infringement of BMG’s copyrights,” the music publisher complained. “This ongoing infringement inflicts irreparable harm on BMG.” For its part Cox wants the jury's decision reversed as ‘a matter of law'.

In another frustrating day for the music industry, but possibly another nail in the coffin of the current tech friendly 'safe harbour' rules, another German court judge has sided with Google’s YouTube in its battle with German music performing right society GEMA, again confirming that the platform is not responsible for what its users upload. The higher regional court of Munich has now rejected GEMA’s claim for damages to the tune of around €1.6 million ($1.75 million). The court upheld a judgement by the lower regional court in Munich, which said YouTube is just a host for uploaded video.TechDirt tells us that one of the worst abusers of copyright law (and US copyright law specifically) to censor critical speech is the government of Ecuador - focussing on the activities of Ares Rights, a Spanish company that has been regularly sending DMCA notices in the US to try to suppress any kind of criticism of Ecuador's government (and also on criticism of Ares Rights). TechDirt goes on to say "this should certainly reinforce the fact that copyright is frequently used for censorship. Sometimes it's censorship that many people approve of, such as blocking someone merely making use of someone else's work -- and sometimes it's used to censor political criticism. Until people recognize, however, that copyright is absolutely (and regularly) used for censorship, it's difficult to have any realistic discussion of how to prevent the abusive kind of censorship with kinds that people may find more reasonable."

A task force set up by the US Department of Commerce has rejected the need to introduce a compulsory license to deal with the issue of remixes although it has suggested the development of negotiated guidelines providing greater clarity as to the application of fair use to remixes; It has also recommended not to change the existing regulation on the first sale doctrine, which could have allowed digital copies of works to be traded without compensation for rights holders, and suggested a series of changes in the field of statutory damages including incorporating into the Copyright Act a list of factors for courts and juries to consider when determining the amount of a statutory damages award. More on Music Week here and on the EFF's website here and of course on this blog - from Marie-Andree!Ukraine's parliament is considering a bill that would require hosting services and Internet service providers to block websites violating copyright - without any form of judicial oversight. Approved in first reading on January 28th, the bill is reported;y the latest in a series of attempts by a group of lawmakers to introduce “anti-piracy” norms into legislation aimed at protecting the Ukrainian cinema, television and video industries. But the latest round of the proposed amendments could impact a broader number of online platforms and Internet users than past policies.And now selfies ...... yes again! Firstly back to that black macaque Naruto: Remember that animal rights organisation PETA argued that non-humans like Naruto should be deemed the author of the selfie he took under the US Copyright Act and PETA would look after the macaque's rights and would use the proceeds from licensing if the photograph to benefit Naruto, his family, and his habitat? Well Judge William H. Orrick disagreed and granted a motion to dismiss the suit. But the judge has now said PETA can have a second chance and has given PETA leave to file an amended complaint—meaning that Naruto the macaque will have a second shot at claiming his copyright.

And secondly - a photo competition with a £2,000 holiday prize from Thomson Holidays has ended up in a real spat between the winners, The Bellis family whose son Jacob took a picture of himself and his dad, David, with a gurning Betty the horse in the snap - and Betty's owner, Nicola Mitchell. The Bellis' say Betty photobombed their son's selfie, which was taken on a public path, but Ms Mitchell says that even though she didn't know about the competition, she is entitled to a share of the prize as the Bell's should have asked for her permission before they took a picture of her horse saying "I didn't give him permission to use our horse in a competition" and that she would be phoning Thomson Holidays to "tell them I'm not happy". Now this is an interesting conundrum - what rights DOES Ms Mitchell have over her horse's image - or indeed what claim could she possibly have over the resultant selfie taken by a three year old boy?

In the United Kingdom, PRS for Music and Phonographic Performance Limited (PPL) have confirmed that, following a strategic review commenced in 2015, the two companies plan to create a joint venture. The new company, jointly and equally owned by PPL and PRS for Music, would focus on serving all PPL and PRS for Music UK public performance licensing customers for both music and sound recording rights. PPL is the music licensing company which works on behalf of record companies and performers to license recorded music played in public. PRS for Music represents the rights of over 115,000 songwriters, composers and music publishers in the UK. The two CMOs say that this will further streamline the experience for customers obtaining public performance licences, allowing them to secure a joint PPL and PRS for Music licence |"with a single phone call or a few clicks on the web, paid for with a single invoice." Over the coming months, PRS for Music and PPL will be undertaking the necessary preparatory work for the joint venture "Including engagement with regulators and other key stakeholders."It is anticipated that the new company would start licensing in 2017, followed by a 12-month period during which the full transition of public performance licensing would be completed. It is likely that the new joint venture will be located in a UK city outside the M25.Robert Ashcroft, Chief Executive, PRS for Music, said, “Creating a single point of contact for our UK public performance customers would allow us to significantly simplify music licensing for UK businesses. It is in our members’ and customers’ interests to ensure that our licensing is ever more accurate and efficient. A joint venture between our organisations would be a landmark event for both societies.”Peter Leathem, CEO, PPL commented, “Both our organisations firmly believe that the proposed joint venture would be a very positive development for both our customers and our members, building on the successful joint licensing solutions and other joint working initiatives that PPL and PRS for Music have delivered over the last few years.”For an interesing analysis of the cost efficiency of PRS and PPL see MBW here

The Task Force then published a Notice
in the Federal Register seeking comment on these issues. It conducted a public
meeting in December 2013 and also held roundtables around the U.S., before reviewing
comments
from stakeholders as diverse as rights holder organizations, Internet-based
companies, public interest groups, libraries, academics, and individual authors
and artists.

Remixes

Remixes use existing works, some
of them still protected by copyright, to create new works, which may be compilations or derivative
works under the Copyright Act, or collective works. As noted by the Task Force, user generated
content (“UGC”) “has become a hallmark of
the Internet” (p.6).

Some of the remixes, such as fan
fiction and fan videos, are created by non-professionals, while others, such as
music mashups, are created by professionals and may even be sold. Several
stakeholders noted that “the lines
between amateur and professional, and between noncommercial and commercial, are
often blurred” (p. 7). Others noted that “noncommercial activities can cause harm to the market for the original
work or for licensed derivative works” (p.8).

Some remixes are fair use, some are
not, and determining what is fair use or not is not easily determinable, even
by attorneys or by courts, as noted by some stakeholders (p.10). The Copyright
Office maintains an online fair use
index to help determine whether a particular use may be fair or not, but this
tool alone does not provide an absolute determination of whether a particular
use is fair or not.

The Task Force did not believe that
a compulsory license, such as the one provided by section 115
of the Copyright Act for phono records, would be advisable. At the time
this compulsory license was enacted, one company had the monopoly on the piano
roll market, and the Task Force has not seen evidence that a similar monopoly
exists today for remixes or their licensing.

Also, such compulsory licenses
would allow the creation of derivative works, whereas statutory licenses now only
permit reproducing, distributing, and public performance of the licensed work,
without alteration (p. 26). While the Task Force acknowledged that remixes are “valuable contributions to society… the
record has not established a need to amend existing law to create a specific
exception or a compulsory license for remix uses” (p. 4).

Instead, the Task Force recommends
three goals to be pursued so that remixers would understand when a use is fair or
not, and to understand how to obtain licenses.

These three
goals are:

1.developing negotiated guidelines which would provide
greater clarity as to the application of fair use to remixes;

2.expanding the availability of a wider variety of
voluntary licensing options; and

The guidelines could be developed
independently or with the collaboration of the government (p. 28) and should be
written in language easily understandable by the general public (p.29). The
White Paper notes that such guidelines already exist, such as the Principles for User Generated Content
Services which aims at “foster[ing]
an online environment that promotes the promises and benefits of UGC Services
and protects the rights of Copyright Owners.”

As licensing would remain voluntary,
authors and rights holders would have the option to refuse granting a license, “especially when the prospective licensee is
seeking permission for a use that the author or rights holder considers
offensive” (p. 30).

A stakeholder gave the example
of the Beatles Hey Jude song used to
create an Anti-Semitic work (see note 44 of the White Paper). But such hateful
use would probably be fair use, and protected by the First Amendment. Only
granting authors a moral right would allow them to bar every use they find
offensive. By the way, what is “offensive”?
The Beatles example would be considered offensive by many, if not all, but
what about use of a protected work to comment on issues where opinions diverge more,
such as political opinions?

First Sale Doctrine

The Task Force noted that works distributed
online are often licensed, not sold, and “this
could make the resale market obsolete” (p. 35). Some stakeholders noted
that the contractual terms of such licenses are often “opaque” (p.39).

Libraries expressed concerns
that their use of digital works may be limited, including eBook library loans
(p. 47). Indeed, libraries may only lend books thanks to the first sale
doctrine, but the Task Force believes that “early
government intervention into the eBook market could skew the development of
innovative and mutually beneficial arrangements” between eBook publishers
and libraries. However, this may change if libraries are not able to “appropriately serve their patrons due to
overly restrictive terms imposed by publishers” (p.4).

In order to preserve the first
sale doctrine in the online environment, the Task Force believes it is not
advisable to extend the first sale doctrine to digital transmissions of copyrighted
works, because of the risks that would cause to copyright owners’ primary
markets.

The Task Force noted that
digital works are offered at lower prices than the hard copies of the works and
thus deliver the benefit offered by the first sale doctrine to consumers who
may purchase used books and used copies of protected works at a lower price
(p.58).

While consumers are not allowed
to resell their digital copies, “[i]t is difficult… to determined the value of
this lost benefit” as the Task Force does not have “sufficient data to conduct an authoritative cost-benefit analysis of the trade-offs
between the consumer benefits from the first sale doctrine and from licensed
online services”(p. 59).

So U.S. law is not (yet) ready
to authorize the resale of digital goods.

Statutory Damages

Statutory damages have been
applied against individuals sharing files online and against online services found
to be secondarily liable for such infringements. Remix artists often refrain
from using a protected work, even they believe their use is fair, as fair use can
not be accurately predicted and “the
threat of high statutory damages can stifle lawful activity” (p.33). Some
stakeholders also argued that statutory damages have a chilling effect on innovation
and investment (p.80), an assessment disputed by some right holder groups (p.
81).

Statutory damages have also allowed
the development of a noxious “business model” of massive copyright infringement
suits (aka copyright trolls), which abuse the litigation process by filing hundreds
of boilerplate copyright infringement suits, using the subpoena power of the
courts to find the identity of Internet users. These suits are, however, rarely
litigated, but instead are settled after intimidating correspondence (p. 74).

The Task Force recommends three amendments
to the Copyright Act so that the needs of copyright owners, users, and
intermediaries may be better balanced:

First, the Task Force recommended
that Congress add a new paragraph in Section 504 of the
Copyright Act to provide a list of factors for courts and juries to
consider when determining the amount of a statutory damages award. It proposed the
insertion of this new clause in subsection Section 504(c): (p.87)

FACTORS
TO CONSIDER -- In making any award under this subsection, a court shall consider
the following nonexclusive factors in determining the appropriate amount of the
award:

(1) The plaintiff’s revenues lost and the
difficulty of proving damages.

(2)
The defendant’s expenses saved, profits reaped, and other benefits from the infringement.

(3) The need to deter future infringements.

(4) The defendant’s financial situation.

(5) The value or nature of the work
infringed.

(6)
The circumstances, duration, and scope of the infringement, including whether
it was commercial in nature.

(7)
In cases involving infringement of multiple works, whether the total sum of
damages, taking into account the number of works infringed and number of awards
made, is commensurate with the overall harm caused by the infringement.

(8)
The defendant’s state of mind, including whether the defendant was a willful or
innocent infringer.

(9)
In the case of willful infringement, whether it is appropriate to punish the
defendant and if so, the amount of damages that would result in an appropriate
punishment.

The Task Force explained that these
factors “should be weighted holistically”
(p. 88).

Thirdly, the Task Force
recommended giving courts discretion to assess statutory damages other than on
a strict per-work basis in cases of non-willful secondary liability for large
scale online services (p. 97).

Small Claims Tribunal

The Task Force is also in favor
of establishing a small claims tribunal, as it believes this “could help diminish the risk of
disproportionate levels of damages against individual file-sharers” (p.5).
This has been proposed by the Copyright Office itself.

The tribunal would be
centralized, in a single location, and would provide for a cap on awards of
both statutory and actual damages. There would be limited discovery and
counterclaims, and all relevant defenses could be asserted, including fair use.
Also, it would not be mandatory to be represented by an attorney, and the
tribunal could award costs and fees against frivolous litigants (p. 99). This
is a very interesting proposal and I hope it will be implemented soon.

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